Obviousness-Type Double Patenting (ODP): Demystifying Recent Trends and Significant Court Rulings
In the U.S. and Canada, courts have designed the doctrine of obviousness-type double patenting (ODP) to prevent inventors from gaining an unjust extension of their patent rights by obtaining patent on the obvious variants of an invention. By rejecting and invalidating ODP, courts prevent the manipulation of issue dates and patent rights by patentees. For years, the scope and applicability of this judicially created doctrine have been continuously shaped by emerging court rulings. In the U.S., two of the sweeping decisions recently issued were Novartis AG v. Ezra Ventures LLC and Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc. In Canada, double patenting practice continues to diverge from U.S. practice, and the differences can have a significant impact on patent strategy.
Patent practitioners should be in the know of the recent court rulings and significant issues surrounding ODP rejections to better handle potential patent risk issues for their clients.
In this LIVE Webcast, patent experts Jennifer Ledwell (Marks & Clerk Canada) and Andrew Radsch (Ropes & Gray LLP) will provide the audience with an in-depth analysis of the ever-changing ODP landscape. They will examine the implications of the recent court decisions and other ODP updates and will offer insights on how to best protect their client’s patent rights.
Key topics include:
- Implications of ODP Law
- Double Patenting – Recent Developments
- Traps and Pitfalls
- Patent Drafting and Prosecution – Best Practices
- Effective Litigation Strategies
Andrew Radsch, Partner
Ropes & Gray LLP
- What is ODP and where did it come from?
- What are the leading/important cases?
- Recent developments
- Open questions/unresolved issues with respect to ODP
- Strategies for litigation
- How to do a proper ODP analysis (e.g., what materials can you refer to)
- Timing of when to press the defense
- Ability to terminally disclaim to cure issue
- Tips for claim construction and depositions
Jennifer Ledwell, PhD, Managing Associate
Marks & Clerk
- ODP practice in Canada – how and why it differs from US practice
- Judicial origins and legal principles of ODP in Canada
- How the doctrine is applied: Key decisions of the Court
- Prosecution strategies for avoiding double patenting
- Unity of invention: what it is and how to use it
- Claiming all aspects of your invention – tips and procedures
- How to handle double patenting objections during prosecution
- Divisional applications
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Consultants
- IP Counsel
- Patent Agents
Andrew Radsch is an experienced trial lawyer in Ropes & Gray’s intellectual property litigation group, where he represents clients in patent and trade secret litigation in jurisdictions across the country. He has experience across a spectrum of industries and technologies, including computer software and hardware, consumer electronics, wireless communications, semiconductor manufacturing, and medical devices. Andrew, a Super Lawyers Rising Star in IP Litigation, also works frequently with clients to develop and execute on offensive and defensive IP and licensing strategies.
Andrew Radsch is an experienced trial lawyer in Ropes & Gray’s intellectual property litigation group, where he represents clients in …
Jennifer’s patent practice is primarily in the areas of biotechnology, pharmaceuticals, and chemistry. She has been a registered Canadian Patent Agent since 2003 and has over 19 years of experience working with patents.
Prior to becoming a patent agent, Jennifer obtained a Ph.D. from Stanford University in the life sciences field and spent two years as a post-doctoral research fellow at Yale University. She has research experience in a variety of scientific areas, including synthetic organic chemistry, electrophysiology, and molecular biology. She has worked on everything from small molecules and mutant proteins to transgenic animals.
Jennifer’s patent practice is primarily in the areas of biotechnology, pharmaceuticals, and chemistry. She has been a registered Canadian Patent …
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Method of Presentation:
General knowledge of patent laws
NY Category of CLE Credit:
Areas of Professional Practice
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About Ropes & Gray LLP
Ropes & Gray’s intellectual property group delivers results over a full range of IP services, from strategic counseling and litigation to licensing and transactions. Our group consists of more than 110 lawyers and technical advisors, many of whom hold advanced degrees in science and engineering disciplines. Our attorneys are regularly recognized for their legal acumen by Chambers, Managing IP, IAM, Legal 500, and other national and global publications. Notably, U.S. News & World Report - Best Lawyers recognized Ropes & Gray as its 2019 “Law Firm of the Year” for Patent Law.
About Marks & Clerk
Marks & Clerk is recognised as one of the world’s leading firms in intellectual property (IP) law. Through a global network of over 650 people worldwide including a qualified team of experienced patent and trademark associates, they are capable of offering a full spectrum of technical expertise on all aspects of intellectual property matters – patents, trademarks, designs and copyright. This includes obtaining protection worldwide, portfolio management, strategic advice, commercial advice, licensing, enforcement, clearance and searches, validity and infringement opinions, due diligence and litigation.
With their network of offices in Canada, United Kingdom (across eight locations) Europe and Asia, and long-established relationships with other leading IP firms around the world, they are able to provide consistent high quality, seamless and cost-effective service to their clients both domestically and globally.